Guidance

Amending your patent after grant

You can make an application to amend your patent after it has been granted either with us or at the Court.

Overview

If someone has objected to your patent, in order to overcome the objections you might decide to amend it.

If you are involved in proceedings in the court or with us, you can file amendments under section 75 of the Patents Act 1977. If you are not involved in proceedings and still want to amend your patent, you can file amendments under section 27. Please note that any material filed may be open to public inspection, including online.

Section 75 before the court

To amend a patent under section 75 before the court, you need to file an Application Notice.

This consists of court form Application Notice N244 (RTF, 10.7KB) , full details of the amendments you wish to make and the reasons for making them, including whether you consider the claims of the patent to be valid prior to any amendment being made.

You need to send this to the court in paper form along with the fee. You also need to send us a copy. If possible, you should send us a copy electronically.

Electronic signature

If you can send us the form N244 electronically, once you have completed it, you need to sign it.

You should use an electronic signature preferably in the form of a text string signature – a string of characters preceded and followed by a forward slash, for example, /your name/.

However we will also accept a facsimile signature in the form of a TIFF or JPEG image of your hand-written signature.

Saving the form

You can save the form N244 and any supporting documents in rtf format or in specific word processor file formats.

Our preference is for Microsoft Word or WordPerfect formats. (Microsoft and WordPerfect are registered trade marks). We can also accept Portable Document Format (PDF).

Section 75 before the Comptroller

To amend a patent under section 75, you need to send us details of the amendments and if possible, you should send us these electronically.

Section 27

To amend a patent under section 27 provide details of the amendments and the reasons for these in paper form. If possible, you should send us details of the proposed amendments and the reasons for these electronically.

Sending amendments after grant electronically

Delivery by email

You may send your amendments by email to litigationamend@ipo.gov.uk. We will not accept an email for these purposes at any other email address. Your e-mail should be entitled:

  • Proposal to amend under section 75 before the court
  • Proposal to amend under section 75 before the comptroller
  • Proposal to amend under section 27

You should include the application notice, full details of the amendments you wish to make and the reasons for making these as attachments as appropriate.

Your email should be a plain text message (RFC822-compliant). We will not accept MS-TNEF/RTF format messages or HTML format messages, nor will we accept messages that are encrypted or digitally signed.

Delivery by floppy disc or CD-R

You can send your amendments to us by floppy disc or CD-R. You should send this with a letter setting out, for example, the patent number, the appropriate section of the Act and a list of the documents included on the disc or CD-R. Please send your letter to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

We will try to read any documents filed electronically. If we are not able to read a particular document, we will contact you to make alternative arrangements.

Setting out amendments after grant

You may find the best way of setting out your amendments is in a schedule. However in most cases if will be much easier for readers to appreciate changes if you use the features available in a word processing program as follows:

Amendment Format Instructions Microsoft Word Instructions WordPerfect
Delete text Strikethrough Select the text to be formatted. From the Format menu, choose Font. Click in the Strikethrough tick box and click OK Select the text to be formatted. From the Format menu, choose Font. Click in the Strikeout tick box and click on OK
New text Bold (see below) Select the text to be formatted. From the View menu, choose Toolbars and Formatting. Click in the B button on the toolbar Select the text to be formatted. From the View menu, choose Toolbars and put a tick in the Property bar tick box by clicking on it. Click on the B button on the toolbar
First amendments Bold red text Follow instructions for bold text. From the Format menu, click on Font. Click in the arrow on the Font colour button. Click on the colour you want for the text Follow instructions for bold text. From the Format menu, click on Font. Click on the Text colour button and click on the colour you want for the text
Second amendments Bold dark blue text See above See above
Third amendments Bold green text See above See above
Fourth amendments Bold Maroon text See above See above

The courts have agreed this method of identifying amendments.

Advertising applications received

We provide you with information about applications we have received to amend the specification of a patent under sections 27 and 75 before the court and the Office. We also include information about when you need to file an opposition if you wish to oppose the application to amend.

Published 20 June 2014